14869196 (P.T.A.B. Jan. 17, 2018)

Ex Parte Howard

Patent Trial and Appeal BoardJan 17, 2018

14869196 (P.T.A.B. Jan. 17, 2018)

United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/869,196 09/29/2015 Richard Howard 83588839 4581 121691 7590 01/19/2018 Ford Global Technologies, LLC/ King & Schickli, PLLC 800 CORPORATE DRIVE, SUITE 200 Lexington, KY 40503 EXAMINER STABLEY, MICHAEL R ART UNIT PAPER NUMBER 3611 NOTIFICATION DATE DELIVERY MODE 01/19/2018 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): u spto @ iplaw 1. net laura @ iplaw 1. net PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RICHARD HOWARD Appeal 2017-005400 Application 14/869,196 Technology Center 3600 Before PHILIP J. HOFFMANN, BRADLEY B. BAYAT, and SHEILA F. McSHANE, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1—17. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. According to Appellant, the invention relates “to a dual function tow hook that also serves as a convenient step for inspecting and servicing 1 Appellant identifies the real party in interest as Ford Global Technologies, LLC. Appeal Br. 3. Appeal 2017-005400 Application 14/869,196 components in the engine compartment of the vehicle.” Spec. 11. Below, we reproduce claim 1 as representative of the appealed claims. 1. A dual function tow hook, comprising: a body forming a tow hook; and an integral step recessed into an upper surface of said body. REJECTION AND PRIOR ART The Examiner rejects claims 1—17 under 35 U.S.C. § 103(a) as unpatentable over Badillo (US 7,396,030 B2, iss. July 8, 2008) and Anderson (US 2013/0270791 Al, pub. Oct. 17, 2013). ANALYSIS Claims 1, 2, 4, 5, and 7—17. With respect to independent claim 1, the Examiner’s rejection relies on a determination that it would have been obvious to modify “[t]he center portion of [Badillo’s] tow[ing] loop [8]” to include the claimed integral step, based on Anderson’s teachings. Answer 5. Appellant argues that the only reason “for combining [Badillo and Anderson] in the manner proposed by the [Examiner] is found in the present application”—i.e., the rejection relies on impermissible hindsight. Appeal Br. 12. Based on our review of the record, Appellant does not persuade us of error, and, thus, we sustain claim 1 ’s rejection. Badillo “is related to a device that is adapted for selective engagement with existing hardware on a vehicle to provide a step.” Badillo, Abstract. More specifically, Badillo discloses using an upper surface of towing loop 8 2 Appeal 2017-005400 Application 14/869,196 as a stepping surface. Id. at col. 5,11. 19—22; see also Answer 3. Badillo further discloses providing “added traction” on a stepping surface, although Badillo does not provide the added traction to towing loop 8, but instead on top surface 18. Badillo col. 5,11. 33—36; see also Answer 3. Anderson discloses a hitch step assembly in which hitch step 20 may further include lateral edges 112 that may provide additional traction for an operator . . . and may provide a tactile indication to the operator that the edge of the hitch step 20 may be close. Specifically, the lateral edges 112 may project upwardly above the main surface of step body 74. Anderson 145 (emphasis omitted); see also Answer 4—5. Thus, Badillo discloses using a towing hook as a stepping surface, and each of Badillo and Anderson disclose towing hooks with added traction provided to stepping surfaces, while Anderson additionally discloses providing upwardly- projecting edges to the stepping surface. We note that modifying Badillo’s towing loop 8 by recessing the stepping surface—i.e., as proposed by the Examiner—results in upwardly-projecting edges as taught by Anderson. Answer 5. Therefore, we agree with the Examiner’s conclusion that it would have been obvious to combine Badillo and Anderson, the motivation being that “modifying] the step of Badillo such that it comprised the recessed step with sidewalls and grooved tread face of Anderson [would] provide additional traction and added safety due to the edge indicator” as discussed in Anderson. Id. at 4; see also Anderson 145. Further, for the reasons set forth above, we are unpersuaded by Appellant’s argument that the Examiner’s rejection lacks sufficient motivation or a rational underpinning. Appeal Br. 11—12. More specifically, as discussed, both Badillo and Anderson disclose providing 3 Appeal 2017-005400 Application 14/869,196 added traction to stepping surfaces, while Anderson additionally discloses providing upwardly-projecting edges to the stepping surface. Thus, we agree with the Examiner that Anderson’s paragraph 45 (Answer 4) provides sufficient motivation that would have led one of ordinary skill in the art to make the proposed modification—“to provide additional traction and added safety” {id. at 5). Still further, we are unpersuaded by Appellant’s argument that “the proposed combination of references ignores the fact that the Badillo reference actually teaches away from the current invention by providing a secondary step 16 separate from but adjacent to the tow[ing] loop 8.” Appeal Br. 13. It is well established that “‘[a] reference may be said to teach away when a person of ordinary skill, upon [examining] the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.’” Para-Ordnance Mfg., Inc. v. SGSImporters Int7, Inc., 73 F.3d 1085, 1090 (Fed. Cir. 1995) (alteration in original) (quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). Appellant does not persuade us that Badillo’s disclosure of provided added traction to secondary step 16’s upper surface 18 discourages one from modifying towing loop 8 as the Examiner proposes. As set forth above, Badillo itself discloses that towing loop 8 is used as a step, and discloses providing added traction to a stepping surface. Thus, based on the foregoing, we sustain the Examiner’s obviousness rejection of claim 1. Inasmuch as independent claim 8 recites similar recitations as claim 1, and Appellant argues claim 8 with claim 1, we also sustain claim 8’s rejection. Further, Appellant does not argue separately 4 Appeal 2017-005400 Application 14/869,196 against the obviousness rejection of claims 2, 4, 5, 7, and 9—17. Therefore, we also sustain the rejection of claims 2, 4, 5, 7, and 9—17. Claims 3 and 6 Appellant separately argues against the rejection of dependent claims 3 and 6. Appeal Br. 13—14. In particular, claim 3 recites “said integral step lies in a plane confined within said upper surface and a lower surface of said body” (Appeal Br., Claims App.), and Appellant argues that “it is unclear where Anderson discloses any upper surface and lower surface, much less an upper surface and lower surface of the body of the tow hook” {id. at 13—14). This argument is not persuasive, however, as we agree with the Examiner that the proposed modification “create[s] a recessed integral step in a plane between the upper surface (top surface of edge indicators) and lower surface (bottom surface of loop).” Answer 5. Further, with respect to claim 6’s recitation that “said body includes an arcuate inner surface between said first and second end walls of said integral step” (Appeal Br., Claims App.), we agree with the Examiner that even “with the edge indicators formed on the loop of Badillo [as a result of the proposed modification], the arcuate inner surface of the loop would still be present” (Answer 5). DECISION We AFFIRM the Examiner’s obviousness rejection of claims 1—17. 5 Appeal 2017-005400 Application 14/869,196 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 6